DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/1/26 has been entered.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Examiner’s Comments
The examiner has cited particular columns and line numbers, paragraphs, or figures in the references as applied to the claims for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
The limitation(s) "complementary" material in the claim 1, the Examiner has given the term(s) the broadest reasonable interpretation(s) consistent with the written description in Applicants' by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Donaldson Co., Inc., 16 F.3d 1190, 1192-95, 29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994). See MPEP 2111. Specifically, the Examiner notes that this term is defined in claim 4, however, there is no specific material associated with being “complementary”. Therefore, the Examiner is taking the position any material would encompass as being “complementary” as long as its structural is defined as recited in claim 4.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 3-4, 6-7, and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Sin Xicola et al. (US 2017/0016500).
Regarding claims 1 and 12, Sin Xicola discloses a process for manufacturing friction material, comprising at least the steps of mechanical activation of grinding of at least one inorganic precursor (claims 1 and 2, [0053]), forming a crystalline and/or amorphous structure [0047-0049], combination of the mechanically activated inorganic precursor with at least one solution with the materials as claimed [0053-0057], combining of at least one liquid binder with at least one complementary material, forming a mixture [0043, 0053-0057, 0062-0066], cold forming of the mixture at a predetermined temperature, pressure and compression time [0067], and curing of the mixture at a predetermined temperature and time [0084].
Although Sin Xicola discloses the grinding step involving grinding inorganic precursor pellets or flakes into powder form ([0053], [0093]), Sin Xicola fails to explicitly disclose the particle size is less than 500 µm as presently claimed.
Although Sin Xicola fails to explicitly disclose the range of the particle size, the examiner contends that powder would overlap the broad claimed range. In the instance case, the difference between “powder” and less than 500 µm or less than 100 µm per claim 12 does not appear confer patentability to the claims in the absence of a showing of critically associated with the claimed particle size range.
Alternatively, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation.
A person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art at the time of the invention was made to optimize the particle size of a powder, since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed particle size is critical and has unexpected results. In the present invention, one would have been motivated to optimize the size of the powder dependent on what the end use friction material was used for.
Regarding claims 3 and 11, Sin Xicola discloses a process for manufacturing friction comprising of a liquid binder of a solution and/or suspension with a medium-high viscosity solution [0130]. Although Sin Xicola fails to explicitly disclose the exact range of the viscosity, the examiner contends that medium-high viscosity would overlap the broad claimed range. In the instance case, the difference between “medium-high” and 10-100,000 mPa-s per claim 3 or 100-50000 mPa-s per claim 11, does not appear confer patentability to the claims in the absence of a showing of critically associated with the claimed viscosity range.
Alternatively, a person having ordinary skill in the art before the effective filling date of the invention would have arrived at the claimed invention by routine experimentation alone, without exercising undue experimentation. Sin Xicola discloses that the viscosity of the liquid binder would overall affect the friction material [0131], thereby, the viscosity of the liquid binder is a result effective variable.
A person having ordinary skill in the art has good reason to pursue known option within his or her technical grasp. It would have been obvious to one or ordinary skill in the art at the time of the invention was made to optimize the viscosity of the liquid binder, since it has been held that, where the general conditions of a claim are disclosed in the prior art, it is not invention to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The burden is upon the Applicant to demonstrate that the claimed amount is critical and has unexpected results. In the present invention, one would have been motivated to optimize the viscosity dependent on what the end use friction material was used for.
Regarding claim 4, please see ([0043] and [0069-0083]).
Regarding claim 6, please see [0067].
Regarding claim 7, please see [0084].
Response to Arguments
Applicant's arguments filed 2/1/26 have been fully considered but they are not persuasive.
Applicant argues the criticality of the claimed particle size of the inorganic precursor and the viscosity of the inorganic binder. However, applicant’s arguments have been found unpersuasive as the evidence is not in commensurate in scope with the claims.
Applicant(s) are reminded that a detailed description of the reasons and evidence supporting a position of unexpected results must be provided by applicant(s). A mere pointing to data requiring the examiner to ferret out evidence of unexpected results is not sufficient to prove that the results would be truly unexpected to one of ordinary skill in the art. In re D'Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306 (1971) and In re Merck & Co, 800 F.2d 1091, 1099, 231 USPQ 375, 381 (Fed. Cir. 1986).
In addition, it is noted that "the arguments of counsel cannot take the place of evidence in the record", In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the Examiner's position that the arguments provided by applicant(s) regarding the alleged unexpected results should be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), "the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001".
Further, regarding to the claimed particle size range of the inorganic precursor and the viscosity of the inorganic liquid binder, the Examiner acknowledges the arguments and respectfully notes that MPEP states that “to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range” (see MPEP § 716.02(d).II.). In this instance, it is not clear in the Specification, the criticality of the claimed particle size of less than 500 µm per claim 1 or less than 100 µm per claim 12 and viscosity range of 10 to 100000 mPa-s per claim 3 or 100-50000 mPa-s per claim 11. As such, a rejection is maintained for independent claim.
Further, applicants are reminded that any evidence of unexpected results must be reasonably commensurate in scope with the claimed limitations. In the instant case, claim 1 is immensely broad:
Basically ANY KNOWN INORGANIC PRECURSOR WITH A WIDE RANGE OF PARTICLE SIZE
Basically ANY KNOWN SOLUTION OF ALKALI METAL/ALKALINE EARTH (METAL HYDROXIDE OR METAL SILICATE)
Basically ANY KNOWN “COMPLEMENTARY” MATERIAL
Basically ANY PREDETERMINED TEMPERATURE, PRESSURE, COMPRESSION TIME DURING COLD FORMING
Basically ANY PREDETERMINED TEMPERATURE AND TIME DURING CURING
This immense breath is not supported fully by the examples, noting that the examples appear to use specific materials and its concentration as well as specific temperature, pressure, and duration during the process of manufacturing the friction material (PGPUB of instant spec: [0109-0123]). Applicants may have additional data (or can present additional data) to broaden the scope or provide evidence that certain classes of materials would behave similarly in the composition, but presently no such evidence exists of record.
Applicant argues that Sin Xicola fails to disclose that the inorganic precursor is mechanically activated by grinding and subsequently added to a solution. This is because applicant argues that Sin Xicola discloses chemical activation, rather than mechanical activation as claimed. Applicant’s arguments have been found unpersuasive. Sin Xicola explicitly disclose hydrothermal synthesis involving sodium hydroxide, wherein it involves grinding in a rotor mill in order to convert it into powder form or grains ([0053], claims 1-2)). Sin Xicola’s sodium hydroxide would corresponds to the broadly claimed “inorganic precursor”. Sin Xicola then discloses a method of mixing “inorganic precursor” with or adding it with kaolin and sodium disilicate in a solution ([0053], [0127], Table 2). Alternatively, mixing of two grains of NaOH would also read upon combining alkaline metal hydroxide with an inorganic precursor. Thereby, the examiner contends that Sin Xicola discloses a mechanical activation of an inorganic precursor through milling. In other words, the mere fact that Sin Xicola explicitly disclose grinding of an inorganic precursor from pellets into powder form would involve mechanical activation, thereby resulting the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA N CHAU whose telephone number is (571)270-5835. The examiner can normally be reached 9AM-5PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571)272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Linda Chau
/L.N.C/Examiner, Art Unit 1785
/Holly Rickman/Primary Examiner, Art Unit 1785